International report - Protecting well-known trademarks proactively 05 Dec 12
Lakshmikumaran & Sridharan - India
On 16th November 2012 the Office of the Controller General of Patents Designs and Trademarks added the trademarks POLO (label with device of polo player) and GE (monogram) to the list of well-known trademarks as provided for under Section 11(8) of the Trademarks Act 1999.
Section 2(1)(zg) of the act defines a 'well-known trademark' as a mark that has become well known to a substantial segment of the public which uses such goods or receives such services, such that use of the mark in relation to other goods and services is likely to be taken to indicate a connection between those goods or services and the mark owner.
The act came into effect on 15th September 2003. Among other changes, it gave statutory protection to well-known trademarks, which were previously protected under common law. The act also harmonised the Indian trademark laws with the requirements of the Agreement on Trade-Related Aspects of IP Rights. The 1999 act sets down factors to be considered for a trademark to be a well-known mark, and makes a clear distinction between well-known trademarks and trademarks in general.
Section 11(6) of the act deals with factors that the registrar will take into consideration when determining whether a trademark should be treated as a well-known trademark. This includes the knowledge or recognition of that trademark by the relevant section of the public, including knowledge in India obtained as a result of promotion of the trademark, and the duration, extent and geographical area of any use of that trademark, as well as any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibitions of the goods or services to which the trademark applies. Records of successful enforcement of the trademark rights – in particular, the extent to which the trademark has been recognised as a well-known mark by any court or registrar – will also be considered. Section 11(10)(i) mandates that the registrar shall protect a well-known trademark against an identical or similar trademark while considering the application for registration of a trademark and any opposition filed against such application.
Even before the 1999 act, the courts protected well-known trademarks against infringement. In Daimler Benz v Hybo Hindustan (Delhi High Court, 1994 PTC 287) plaintiff Mercedes Benz sought an injunction against the defendant, who was using the three-pointed star in a circle and the word "Benz" on underwear. The court granted an injunction against the defendant. In another case, the Bombay High Court restrained the defendant from using the mark WHIRLPOOL for its goods on the grounds that the mark had established a cross-border reputation in India (l996 PTC 415). The plaintiff’s mark was registered in India in 1977 but had not been renewed, and the defendant was using the mark on its washing machines.
Since the amendment to the act, a well-known trademark may be protected among all classes irrespective of its registration in a particular class or classes. The Indian courts have protected well-known trademarks in several cases. In Rolex Sa v Alex Jewellery Pvt Ltd (Delhi High Court, CS(OS) 41/2008) the defendant sold fake jewellery under the name "Rolex", which is a well-known trademark for watches and is used worldwide. The ROLEX trademark has been registered by the plaintiff with respect to watches since 1953. The Delhi High Court stated that the segment of the public which purchases watches in the plaintiff's price range was likely to be misled if it came across jewellery bearing the ROLEX trademark. Therefore, the use of the mark by the defendant was found to be an attempt to take unfair advantage of the reputation and goodwill of the plaintiff.
In Tata Sons Ltd v Md Jawed (Delhi High Court, CS(OS) 264/2008),the plaintiff stated that the defendant's use of the A-ONE TATA mark was inherently deceptive. The Delhi High Court also referred to the judicial recognition given to well-known trademarks and concluded that as far as India is concerned, "TATA is almost a household name". The court restrained the defendant permanently from using the TATA mark.
Similarly, in The Polo/Lauren Company LP v Rohit Bajaj (CS(OS) 1763/2005, 19th December 2011) the Delhi High Court accepted the plaintiff's trademark as a well-known mark and restrained the defendant permanently from using the POLO mark. The court also extended the protection under the trademarks law to domain names, as established in Yahoo Inc v AkashArora (1999 PTC 201).
Therefore, the trademark legislation provides effective and adequate protection to trademarks, particularly well-known marks. The Indian IP administration is also working proactively to include such well-known trademarks in the list which it maintains.
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